EXHIBIT 10.10
FIRST AMENDMENT TO
RESEARCH AND LICENSE AGREEMENT
THIS FIRST AMENDMENT TO RESEARCH AND LICENSE AGREEMENT (the "Amendment") is
made this 1st day of September, 1995, by and among SRI International, a
California nonprofit public benefit corporation ("SRI"), the ▇▇▇▇▇ ▇▇▇▇▇▇▇
Research Center (a wholly owned subsidiary of SRI), a Delaware corporation
("▇▇▇▇▇▇▇") and SolarCare Technologies Corporation, a Delaware corporation
("STC").
W I T N E S S E T H:
WHEREAS, SRI, ▇▇▇▇▇▇▇ and STC entered into that certain Research and
License Agreement dated April 26, 1995 (the "Agreement", initially capitalized
terms being used herein as defined therein, unless otherwise defined herein);
and
WHEREAS, SRI, ▇▇▇▇▇▇▇ and STC desire to amend the Agreement, as provided
herein.
NOW, THEREFORE, SRI, ▇▇▇▇▇▇▇ and STC, each intending to be legally bound
hereby, covenant and agree as follows:
Section 1. Amendments to Agreement.
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Sections 3.1 through 3.7 of the Agreement, effective as of the date
hereof, are hereby amended by deleting such Sections in their entirety and
substituting the following therefor:
3.1 Conduct of Research. During the Development Period each of
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▇▇▇▇▇▇▇ and SRI shall use their commercially reasonable efforts to conduct the
Development Program in accordance with the tasks set forth on Exhibit A (each, a
"Task" and, collectively, the "Tasks"), as such Exhibit may be amended, in
writing, from time to time by Task Orders (as such term is hereinafter defined).
Each Task shall describe in reasonably sufficient detail (a) the research
activities to be conducted and the objectives thereof, (b) the responsibilities
of the parties, the principal researchers (if any) and any specific resources
required to conduct the research activities, (c) the total funding and the
payment schedule therefor and (d) an estimated schedule for such activities.
▇▇▇▇▇▇▇ and SRI shall conduct the Development Program in good scientific manner,
and in compliance in all material respects with all requirements of applicable
laws, rules
and regulations. Because the research services to be performed are of an
advisory or experimental nature, ▇▇▇▇▇▇▇ and SRI do not warrant that the
Development Program, in whole or in part, will be successful or achieve the
objectives set forth on Exhibit A.
3.1.1. The Development Program to be performed by Licensors for STC
shall be administered by a Program Advisory Team (the "Program Advisory Team").
The Program Advisory Team shall consist of three members, with one person
representing each of SRI, ▇▇▇▇▇▇▇ and STC. The Program Advisory Team shall
communicate, confer and/or meet from time to time at the request of any party.
The initial members of the Program Advisory Team shall be as follows:
Person Affiliation Telephone Facsimile
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▇▇▇ ▇▇▇▇▇▇▇▇ STC (▇▇▇) ▇▇▇-▇▇▇▇ (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ (609) ▇▇▇- (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ SRI (▇▇▇) ▇▇▇-▇▇▇▇ (▇▇▇) ▇▇▇-▇▇▇▇
The members of the Program Advisory Term may be replaced, subject to the prior
approval of STC, which approval shall not be withheld unreasonably. The role of
the Program Advisory Team shall be to facilitate communication among SRI,
▇▇▇▇▇▇▇ and STC with respect to the conduct of the Development Program and to
plan for and administer Task Orders to maximize the opportunity for the
successful completion of Task Orders in the most efficient and cost effective
manner. Specifically, the role of the Program Advisory Team shall include, but
shall not be limited to the following: (i) identifying to STC areas of
necessary or desirable research for Task Orders (including the development of
Task Orders for the second year effort, as set forth in Section 3.3); (ii)
advising STC with respect to Task Order priorities; (iii) advising STC with
respect to the objectives, scope, methodology and specifications of each Task
Order; (iv) maximizing the opportunity for successful completion of Task Orders
by identifying the most appropriate personnel to implement a particular Task
Order and (v) overseeing the conduct and completion of each Task Order.
Notwithstanding the foregoing, the recommendations of the Program Advisory Team
shall be advisory only and STC shall specify which new Tasks to pursue and in
which order, the objectives, scope, methodology and specifications of each Task
Order, the selection of the personnel (and institution) to implement each Task
Order and the form, scope and manner of communicating and/or delivering the
interim and final results of each Task Order. Except as set forth in Section
3.6, neither SRI nor ▇▇▇▇▇▇▇ shall charge or receive any compensation for the
administration of the Development Program. On the basis of the foregoing, from
time to time during the term of the Development Period, (y) STC and ▇▇▇▇▇▇▇ may
mutually agree on the scope of new Tasks to be conducted by ▇▇▇▇▇▇▇ to be
included in the Development Program and/or (z) STC and SRI may mutually agree on
the scope of new Tasks to be conducted by SRI to be included in the Development
Program.
3.1.2. Each new Task shall be in writing ("Task Order") and shall
reference the Agreement and describe in reasonably sufficient detail (a) the
research activities to
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be conducted and the objectives thereof, (b) the responsibilities of the
parties, the principal researchers (if any) and any specific resources required
to conduct the research activities, (c) the total funding and the payment
schedule therefor and (d) an estimated schedule for such activities.
3.1.3. STC and SRI or ▇▇▇▇▇▇▇, as the case may be, shall execute a
copy of each mutually acceptable Task Order which thereafter shall be
incorporated in and made a part of this Agreement.
3.1.4. Upon receipt by ▇▇▇▇▇▇▇ or SRI, as the case may be, of a
fully-executed copy of the Task Order and any initial research payment required
for such Task, ▇▇▇▇▇▇▇ and/or SRI shall initiate each new Task under the
Development Program.
3.1.5. Licensors shall ensure that all of their respective employees
and independent contractors have executed and delivered binding agreements
agreeing to assign all intellectual property rights to ▇▇▇▇▇▇▇ or SRI, as the
case may be, and to promptly report the conception and reduction to practice of
all discoveries and inventions to the ▇▇▇▇▇▇▇ or SRI Intellectual Property
Office, as the case may be.
3.2. Funding. In consideration of the participation of ▇▇▇▇▇▇▇ and
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SRI in the Development Program, STC agrees to pay to ▇▇▇▇▇▇▇, on behalf of
Licensors, a research fee of Two Hundred Thousand ($200,000) for the work to be
performed during the first year of this Agreement (the "Year 1 Fee"). The Year 1
Fee shall be paid to ▇▇▇▇▇▇▇, as set forth below. Licensors shall not incur
expenses in conducting the Development Program in excess of such total amount,
and STC shall have no obligation to reimburse Licensors for expenses incurred in
excess of such total amount, unless otherwise expressly agreed to in writing by
both parties. If it appears to Licensors that the Development Program to be
conducted during the first year of this Agreement cannot be completed without
incurring expenses in excess of such total amount, Licensors shall notify STC,
and STC shall determine whether (a) to discontinue the Development Program when
such total amount has been spent, (b) to authorize Licensors to spend additional
amounts, or (c) to revise the scope of the Development Program, as appropriate.
Such Year 1 Fees are non-refundable and non-creditable against future royalties,
and following an initial payment by STC to ▇▇▇▇▇▇▇ of One Hundred Thousand
($100,000), within 7 days of the Effective Date, ▇▇▇▇▇▇▇ and SRI shall initiate
work on the Development Program. Such initial payment shall be applied to the
Tasks in accordance with Exhibit A and subsequent Task Orders. Thereafter, all
future payments by STC will be based on the Task Order schedule for payment
terms as called for under Section 3.1.2 (c) above.
3.3. Second Year Funding. Not less than sixty (60) days prior to the
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expiration of the first year of the Development Period, the Program Advisory
Team shall have developed and presented a written development proposal in the
form of proposed Task Orders, for the second year effort. STC shall commit to a
research fee of Three Hundred Thousand ($300,000) for the work to be performed
during the second year (the "Year 2 Fee") to maintain the license granted
herein, except in the event that the Development Program is terminated or
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modified by STC pursuant to Sections 13.3 and 13.6 or the second following
sentence. The Year 2 Fee shall be paid in accordance with the last sentence of
this Section 3.3. Notwithstanding the commitment of the Year 2 Fee and, in
addition to the rights of STC set forth in the second sentence of this Section
3.3, STC may request that the Year 2 Fee be reduced to an amount less than
$300,000 in the event that ▇▇▇▇▇▇▇ and SRI have failed to substantially perform
the Development Program during the first year of the Development Program. In
such case, a new Development Program for the second year may be entered into by
written consent of the Parties. The Year 2 Fee is non-refundable and non-
creditable against future royalties. The payment by STC of the Year 2 Fee will
be in accordance with the terms of the Task Orders for the second year of the
Development Program.
3.4. Renewal. By mutual written agreement and consent of the
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Parties, the Development Program may be extended beyond the Development Period
for additional periods of one (1) year each. If STC desires to renew the
Development Program, STC shall give the Program Advisory Team written notice of
such election not less than sixty (60) days prior to the expiration of the then
current Development Period, as applicable. The Program Advisory Team, on behalf
of Licensors, shall have thirty (30) days to present to STC a written
development proposal in the form of proposed Task Orders for the renewal year.
3.5. Records. SRI and ▇▇▇▇▇▇▇ shall each maintain records, in
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sufficient detail and in good scientific manner, which shall reflect all work
done and results achieved in the performance of each of their respective Tasks
included in the Development Program (including all data in the form required
under all applicable laws and regulations).
3.6. Meetings and Progress Reports. During the term of the
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Development Program, ▇▇▇▇▇▇▇ and SRI shall each keep STC generally informed of
the progress under each of their respective Tasks, including telephonic
conferences or other communications at STC's request and meetings at ▇▇▇▇▇▇▇,
SRI or STC, at STC's request. The Program Advisory Team will meet approximately
four times a year, but in no case shall there be (i) more than four (4) months
between meetings or a delay of more than one (1) month from the date of
completion of a Task, except as mutually agreed in writing. The first meeting
shall be held at ▇▇▇▇▇▇▇ shortly after the Effective Date. The reasonable
travel and subsistence costs for those SRI and/or ▇▇▇▇▇▇▇ meeting participants
invited by STC to attend a meeting will be invoiced separately from Development
Program payments and shall be paid by STC, upon the presentation of accurate and
complete conforming documentation. If requested by STC, ▇▇▇▇▇▇▇ or SRI, as the
case may be, will provide STC with minutes of each meeting within ten (10) days
after the conduct of such meeting. STC shall give GIB (as such term is defined
in Section 17.5) prompt notice of the arrangement of any proposed meeting
between STC and any Licensor relating to the Development Program. A
representative of GIB (reasonably acceptable to the parties) shall be permitted
to attend any such meeting. All costs and expenses of GIB and its
representative in connection with attendance at such meeting shall be borne by
GIB. In the event and to the extent required by STC and included in a Task
Order, a written report from ▇▇▇▇▇▇▇ and SRI containing, in reasonable detail, a
description of the work performed by ▇▇▇▇▇▇▇ and SRI under each of their
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respective Tasks of the Development Program and the results thereof will be
transmitted to STC upon the first to occur of (i) fifteen (15) days after the
completion of each Task and (ii) five (5) days prior to each scheduled meeting
relating to such Task.
3.7. Final Task Report. In the event and to the extent required by
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STC and included in a Task Order, within thirty (30) days following the
completion of each of their respective Tasks, ▇▇▇▇▇▇▇ and/or SRI, as the case
may be, shall prepare and provide STC with a detailed written final Task report,
which shall describe the work performed by Licensors under each of their
respective Tasks of the Development Program and the results thereof.
Section 2. Further Action and Assurances.
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STC, SRI and ▇▇▇▇▇▇▇ hereby agree to execute and deliver such
additional documents and shall cause such further and additional action to be
taken as may be required or, in the reasonable judgment of STC, SRI and ▇▇▇▇▇▇▇,
necessary or desirable to effect or evidence the provisions or intent of this
Amendment and the transactions contemplated hereby.
Section 3. Reference to and Effect on the Agreement.
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a. Upon the effectiveness of Section 1 hereof, on and after the date
hereof, each reference in the Agreement to "this Agreement", "hereunder",
"hereof", "herein" or words of like import, and each reference in the other
documents entered into in connection with the Agreement, shall mean and be a
reference to the Agreement, as amended hereby.
b. Except as specifically amended above, the Agreement shall remain
in full force and effect and is hereby ratified and confirmed.
c. The Agreement, as modified by this Amendment, constitutes the
entire understanding among the parties with respect to the subject matter
thereof, and supersedes any prior understanding and/or written or oral
agreements between them.
Section 4. Execution in Counterparts.
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This Amendment may be executed in any number of counterparts and by
the different parties hereto in separate counterparts, each of which when so
executed and delivered shall be deemed to be an original and all of which taken
together shall constitute but one and the same instrument.
Section 5. Governing Law.
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This Amendment shall be governed by and construed in accordance with
the laws of the State of California, without regard to the conflicts of law
principles thereof.
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Section 6. Headings.
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Section heading in this Amendment are included herein for convenience
of reference only and shall not constitute a part of this Amendment for any
other purpose.
[Executions set forth on the next page]
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IN WITNESS WHEREOF, the parties hereto have caused this First Amendment to
Research and License Agreement to be executed by their respective officers
thereunto duly authorized as of the date first above written.
SRI INTERNATIONAL
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
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▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, President
▇▇▇▇▇ ▇▇▇▇▇▇▇ RESEARCH CENTER
By: /s/ ▇▇▇▇▇▇ ▇. Catenese
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▇▇▇▇▇▇ ▇. Catenese, Vice President
SOLARCARE TECHNOLOGIES CORPORATION
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
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▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, President and
CEO
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Exhibit A
Description of Services
Task 5.3: Polymer Microencapsulation
SRI Proposal Number: PYC 95-122R1
Reference: All work shall be subject to the provisions set forth in
the "Research and License Agreement" among SRI
International, ▇▇▇▇▇ ▇▇▇▇▇▇▇ Research Center, and STC
Diagnostics, Inc.
SRI International will provide the appropriate personnel and administrative
support and exert its commercially reasonable efforts to determine the
feasibility of coacervatively encapsulating the submicron phosphor particles
with a functional polymer coating. This study is intended to support the
aqueous phase stability of phosphor dispersions and provide an improved surface
composition for conjugation of antibodies or other proteins to the phosphors.
If successful, variations of this process should be generally applicable for the
coating of any upconverting phosphor composition.
We propose to coat (Y\\0.86\\Yb\\0.08\\Er\\0.06\\)\\2\\O\\2\\S phosphor powders
with a layer of polymethyl methacrylate:methacrylic acid (95.5) to be obtained
from Polysciences. Phosphor particles will be encapsulated in this polymer by
nonsolvent-induced phase separation coacervation. Briefly, the process consists
of suspending phosphor particles in a solution of the polymer in a nonaqueous
solvent. With the suspension being continuously stirred, a nonsolvent for the
polymer is added dropwise to induce phase separation of the polymer around the
phosphor particles. The rate of stirring is monitored to prevent formation of
polymer lumps. The incipient microcapsules are hardened by further addition of
nonsolvent and stirring. The suspension is filtered to yield dry, free-flowing
microcapsules.
Appropriate solvents and nonsolvents for the polymer will be determined by
literature review and preliminary solubility experiments. The microcapsules
will be characterized by scanning electron microscopy and particle size studies.
This task will led by ▇▇. ▇▇▇▇ ▇▇▇▇, Chemist II in the Controlled Release and
Biomedical Polymers Program. ▇▇. ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, Fine Particle Technology
Program Manager will be the project supervisor.
The duration of this task will be one (1) month, with an estimated cost of
$10,000. SRI requests that the full amount of $10,000 be paid to initiate the
task. A final assessment of the feasibility of this manufacturing approach will
be delivered to STC Diagnostics within 3 weeks of completion of the experimental
work. This proposal will remain in effect until September 30, 1995; however SRI
will grant an extension if requested.
Exhibit A
Description of Services
Task 5.1: Silica Coating in the Fluidized Bed Reactor
SRI Proposal Number: PYC 95-120R1
Reference: All work shall be subject to the provisions set forth in
the "Research and License Agreement" among SRI
International, ▇▇▇▇▇ ▇▇▇▇▇▇▇ Research Center, and STC
Diagnostics, Inc.
SRI International will provide the appropriate personnel and administrative
support and exerts its commercially reasonable efforts to determine the
feasibility of using a fluidized bed process coat upconverting phosphor
particles with a thin layer of SiO\\2\\. This study is intended to support the
aqueous phase stability of phosphor dispersions and provide an improved surface
composition for conjugation of antibodies or other proteins to the phosphors.
If successful, variations of this process should be generally applicable for the
silica coating of any upconverting phosphor composition.
We propose to coat (Y\\0.86\\Yb\\0.08\\Er\\0.06\\)\\2\\O\\2\\S phosphor powders
with a thin layer (10-50 nm) of a dieletric such as SiO\\2\\ in a fluidized bed
reactor using a tetraethylorthosilicate as the SiO\\2\\ precursor. This
technique is capable of producing thin, conformal coatings on particulate
substrates such as TiO\\2\\. the coatings will be characterized by Auger
electron spectroscopy.
Assuming the work in ▇▇▇▇▇ ▇, ▇▇▇▇▇ 1 and 2 is successful, the phosphor
materials generated in those tasks can be used directly in this task. If these
tasks do not result in successful materials, we can perform these feasibility
studies on waste aggregate material left over from other synthesis and
fractionation tasks to support this study.
This task will be led by ▇▇. ▇▇▇▇▇ ▇▇▇▇▇▇▇▇, Inorganic Materials Program
Manager. ▇▇. ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, Fine Particle Technology Program Manager, will
be the project supervisor.
The duration of this task will be one (1) month, with an estimated cost of
$10,000. SRI requests that the full amount of $10,000 be paid to initiate the
task. A final assessment of the feasibility of this manufacturing approach will
be delivered to STC Diagnostics within three (3) weeks of completion of the
experimental work. This proposal will remain in effect until September 30,
1995; however, SRI will grant an extension if requested.
STC hereby concurs with the above and, by signing in the space provided below,
authorizes SRI to begin Task 5.1.
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